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Judgment
S. Usha, J
The original rectification application is for removal of the trade mark 'RESPONSE" registered under No. 1064136 in class 25. The applicant is engaged in the business of manufacturing and marketing of wide range of products like sports shoes, apparel and accessories including track suits, T Shirts, shorts, polo shirts, accessories and equipments of the highest quality. They are one of the world's leader in sporting goods industry with sports brand built on a passion for sports and a sporting lifestyle.
2 . The applicants products are distributed in more than 160 countries worldwide including India. They have spent huge sum of money in promoting its products. The applicants products bearing the trade mark RESPONSE is available in India since 1989. The applicants goods are available in duty free shops in various airports and has thus become a well known mark among the public.
3 . The trade mark RESPONSE in respect of footwear and apparels is used by the applicants continuously and extensively. The mark is registered in U.S.A. and Germany in class 25. The trade mark RESPONSE is a famous and well known trade mark in relation to footwear.
4 . In the month of June 2010, the applicants came to know of the impugned registration. The applicants had filed an application under No. 1800356 in class 25 for the trade mark RESPONSE for registration. The Registrar while examining the application had cited the impugned trade mark registration. From the examination report and on enquiry it was revealed that the date of user in the impugned application, a wrong date of user was claimed.
The impugned registration had been obtained without any good cause or bonafide intention to use the mark and the mark is liable to be removed under section 47 of the Act. The registration is in contravention of the provisions of the Act. The applicant is a person aggrieved as the marks are identical. The mark is wrongfully remaining on the register.
The respondents, despite service, did not file their counter statement nor did they appear for the hearing on 24/09/2012 and therefore were set ex parte. The learned counsel for the applicant advanced their arguments and sought time to file their documents in support of their case. We granted four months time to file their documents along with a Miscellaneous Petition and imposed costs of Rs. 5,000/-. The applicants have complied with the directions but there has been a delay of 11 days. The Registry of this Board has directed the applicants to file a Miscellaneous Petition to condone the delay of 11 days, which is yet to be complied with.
7 . The learned counsel also relied on two judgments of this Board reported in MANU/IC/0007/2012 and ORA/184/2009/TM/DEL in support of their case of non us of the mark by the respondents.
8 . The learned counsel for the applicant reiterated whatever was stated in the grounds of the application and statement of case.
We have carefully considered the same and have gone through the pleadings and documents.
10 . The settled principle of law is that a person aggrieved may alone file an application for rectification while any person may file an opposition to the registration of a trade mark. The applicants only contention is that they are aggrieved as the marks and the goods are identical. Even considering the fact that the marks and the goods are identical we do not find any reason for the applicants to be aggrieved.
11 . The applicants have filed certain documents along with the application for rectification. They are - various registration certificates in various countries, the respondents Trade Mark Journal advertisements, the examination report of the application No. 1800356 filed by the applicants and an affidavit by Shri Rakesh Chhabra regarding the market enquiries about the respondents trade mark. Subsequently, the applicants have filed a printout from their website - www.adidas.co.in listing the products available for sale under the mark RESPONSE and other websites which had published the applicants Footwear technology programme across six cities.
We shall now deal with the documents. The first set of documents namely the registration certificates does not prove their user. The examinational report and the affidavit will also be of no help to the applicants. In the second set, the 1st website is regarding the list available for sale. This will also be of no help as it does not give any date and it is not a sale but only goods which are for sale. The other documents pertaining to the Technology programme states about the launching programme. It is an article from the magazine Brand Reporter dated October 1-15, 2004 where the managing director of Adidas India has stated that "the company would double its revenue in India this year. It was only last year that adidas, which had put its India operations on the back burner for almost as long as it's been here, started to get its act together. As part of this act, it recently launched a new range of technical running shoes, which includes the Adistar, Supernova and Response families."
From the statement of the managing director, it is seen that only in 2005, the company is launching the product. Therefore, the use by the applicant if at all in India it would be only from 2005 and thereafter. Applying the principle of the Hon'ble Supreme Court in Milmet Oftho Industries and Ors. vs. Allergen Inc. : 2004 (12) SCC 624] there is no proof of the applicant's use even outside India.
The application is for rectification where the burden to prove confusion is on the applicant. The applicant has not satisfied the same.
15 . The main ground of rectification is that the respondents had no bonafide intention to use the trade mark. The applicants therefore, relied on the judgments by this Board where it was held that if the matter is not represented by the respondents, then it is to be taken that the respondents are not using the trade mark where the allegation is without rebuttal. In those cases, the applicants had satisfied their use and reputation by placing sufficient bills and invoices. In this case, there is no evidence of use. The use by the applicant if at all can be only from the year 2005. The applicants in this case have not satisfied us as to how ? they are aggrieved person; and ? there is confusion or deception among the public. In these circumstances, we do not think it fit to remove the trade mark from the register. The application is therefore dismissed. In view of this, Miscellaneous Petition No. 194/2011 for early hearing of the application is also dismissed. No order as to costs. The Registry is directed to issue the order copy only on receipt of the Miscellaneous Petition for condoning the delay.